T 1840/19 - Non-novel 2nd non-medical use

Key points

•  This case provides a refresher of the holding of G 2/88: "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."
• Claim 14 is directed to: " Use of a compound [boric acid] for stabilizing a soil-release polymer comprising ester moieties in the presence of a lipase" 
• Claim 12 is directed to a method. Board 3.3.06 deals with the novelty of both claims together. " to decide whether the subject-matter of claims 12 and 14 is novel or not, it is necessary to establish which specific limitations result from the method/use features, and to subsequently assess whether such limitations are explicitly or implicitly anticipated by the cited prior art" 
• "  The stabilising effect is explained in the description of the patent, which indicates (par. [0007] and [0008]) that the invention is based on the surprising finding that said substance stabilises the soil-release polymer in the presence of lipase, an effect which appears to be associated with the inhibition of lipase in the presence of the proposed substance. " 
• D9 discloses in an example "a composition including a lipase, a soil-release polymer and boric acid" 
• "[In use claim 14] the purpose of stabilising the soil-release polymer simply requires adding a substance as defined in that claim to a composition including lipase and solid-release polymer." 
• The Board then applies G2/88, though not the headnote but r.7.1: "this issue is explicitly addressed in decision G 2/88 (see reasons 7.1 and 7.2), which indicates that when a known entity is used for a new purpose, the question to be asked is what the actual technical features of the claim are (i.e. which specific features are associated with the new purpose). Only if it can be concluded that the use involves "new means of realisation" in the form of technical steps which are not disclosed in the prior art, can the claim be considered to be novel." 
• The Enlarged Board in G2/88 r.7.1: " In the Enlarged Board's view, the distinction drawn by the [opponent] is a fundamental one, and can be developed as follows. In relation to a claim to a use of a known entity for a new purpose, the question initially arises: what are the technical features of the claim? If the claim includes as a technical feature a "new means of realisation ation" by which the new purpose is achieved, in the form of steps of a physical activity, which are not disclosed in the state of the art in association with the known entity, then the claim is clearly novel because of the presence of that technical feature." 
• In the above paragraph, the EBA first deals with the easy case. The EBA then turns to the more difficult cases.
• The EBA in G2/88" In relation to a claim to a use of a known entity for a new purpose, the initial question is again: what are the technical features of the claimed invention? If the new purpose is achieved by a "means of realisation" which is already within the state of the art in association with the known entity, and if the only technical features in the claim are the (known) entity in association with the (old) means of realisation, then the claim includes no novel technical feature [and the claim is not  novel]" (emphasis added)
• However, the Enlarged Board then continued in G2/88: "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 ... Thus with such a claim, where a particular technical effect which underlies such use is described in the patent, having regard to the Protocol [on Art.69], the proper interpretation of the claim will require that a functional feature should be implied into the claim, as a technical feature; for example, that the compound actually achieves the particular effect." 
• This leads to headnote 3 and r.10.3 of G2/88: "with respect to a claim to a new use of a known compound, such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in Article 54(2) EPC, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public." 
• It is not clear to me why headnote 3 of G3/88 would  not apply in the present case. It is also unclear to me why the TBA cites r.7.1 and 7.2 of G2/88 only and not r.10.3 of G2/88.
  
  
• To cite T59/87 of 14.08.1990: "in Decision G 2/88 it was emphasised in paragraph 10.1 that the question to be decided is what has been made available to the public, not what may have been inherent in what was made available to the public. Furthermore, as emphasised in paragraph 10, when considering how far the teaching in a written description also makes available to the public the inevitable result of carrying out such teaching, in each case "a line must be drawn between what is in fact made available and what remains hidden or otherwise has not been made available"." 

EPO T 1840/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191840eu1.html

2. Main request - Novelty

The board has concluded that the requirements of Article 54 EPC are not met for the following reasons:

2.1 Document D9 (WO 00/22079 A1) discloses in its example F (table VII on page 62) a detergent formulation comprising 4.0 wt.-% boric acid, 0.01 wt.-% lipase and 1.5 wt.-% SRP2, wherein SRP2 (see page 52) is a short block polymer including ester groups.

2.2 Claim 1

2.2.1 The proprietor argued that the lipase in D9 was described on page 50 as a commercial preparation having 2.0% by weight of active enzyme. Consequently, the real active enzyme concentration in said example F was 0.0002%, (i.e. 2.0% of active lipase in the 0.01 wt.-% of the commercial lipase) so the actual SRP2:lipase and boric acid:lipase ratios in example F were respectively 7500:1 and 20000:1, which fell outside the claimed ranges.

2.2.2 The board disagrees with this argumentation, because the calculations made to estimate the concentration of active enzyme do not appear to be justified in view of the content of D9. In particular, it is not convincing that the enzyme concentrations in table VII of D9 are expressed using the weight of the commercial preparations as reference rather than the weight of the active enzyme. In this respect, it is noted that document D9 discloses (page 30, last par. to page 31, 3rd par.) the preferred concentrations of the enzymes in terms of the active enzyme, which provides a first indication that the data in table VII should also be interpreted in this way. If one follows the proprietor's interpretation, the lipase concentration of example F would fall outside the preferred range described on page 31 (i.e 0.0002% vs. the preferred range of 0.001% to 0.5%) and the enzyme concentrations of examples A, B, D, E and G in table VII would not even fall within the broadest ranges defined on pages 30 and 31 (e.g. example B would include 0.00004% lipase and 0.000064% amylase, both being under the minimum value of 0.0001% of lipase and amylase disclosed in the 2nd and 3rd par. of page 31 of D9). By contrast, when the values in table VII are considered to represent a concentration of active enzymes, which is in-line with the reference used on pages 30 and 31 and also appears to be the more reasonable interpretation from a technical point of view, all the examples fall within the most preferred ranges described on pages 30 to 31 of D9. It is therefore manifestly apparent for the board that the enzyme percentages in table VII of D9 are expressed in terms of active enzyme concentrations, which implies that the SRP2:lipase and the boric acid:lipase ratios in example F are respectively 150:1 and 400:1, both falling within the scope of claim 1.

The board is therefore of the opinion that the subject-matter of claim 1 is not novel in view of document D9.

2.3 Claims 12 and 14

2.3.1 The proprietor argued that claim 12 at issue defined a method for stabilising a soil-release polymer, which was not anticipated by the cited documents describing a detergent composition and a method for preparing it, because the step for stabilising the polymer represented as such a limiting feature which established novelty.

Similarly, the intended purpose of the substances in the use claim 14 to stabilise the soil-release polymer was also a limiting feature following decision G 2/88. Since there was no explicit indication in the cited documents that the presence of certain components such as boric acid was intended to stabilise the soil-release polymer, claim 14 was also novel in view of the cited prior art.

2.3.2 The board disagrees with the above argumentation for the following reasons:

While it is true that both the functional aspects of a method claim and the purpose of a use claim limit the scope of protection, the proprietor failed to assess which specific limitations can be derived from such method/use features, and simply concluded that the invention was novel because the prior art did not explicitly anticipate the stabilising effect defined in those claims.

In fact, to decide whether the subject-matter of claims 12 and 14 is novel or not, it is necessary to establish which specific limitations result from the method/use features, and to subsequently assess whether such limitations are explicitly or implicitly anticipated by the cited prior art.

Claim 12 defines a method for stabilising a soil-release polymer in the presence of lipase by adding a substance selected from a group including boric acid. The stabilising effect is explained in the description of the patent, which indicates (par. [0007] and [0008]) that the invention is based on the surprising finding that said substance stabilises the soil-release polymer in the presence of lipase, an effect which appears to be associated with the inhibition of lipase in the presence of the proposed substance. This is further exemplified in several experiments of the patent (par. [0060]-[0071]) which compare detergent compositions including lipase and a soil-release polymers with and without such inhibiting substance (e.g. boric acid).

In view of the above disclosure in the patent, it is thus apparent that the step defined in claim 12 of stabilising the soil-release polymer in the presence of lipase simply involves incorporating one of the defined substances (e.g. boric acid) to a detergent including a solid-release polymer and lipase.

In the prior art document D9, its Example 9 does not only disclose a composition including a lipase, a soil-release polymer and boric acid, but it also anticipates a boric acid concentration (4.0 wt.-%) which falls within the most preferred range of 3.0 to 5.0 wt.-% according to par. [0022] of the opposed patent.

A similar argumentation applies to the subject-matter of use claim 14, in which the purpose of stabilising the soil-release polymer simply requires adding a substance as defined in that claim to a composition including lipase and solid-release polymer. In this respect, it is noted that this issue is explicitly addressed in decision G 2/88 (see reasons 7.1 and 7.2), which indicates that when a known entity is used for a new purpose, the question to be asked is what the actual technical features of the claim are (i.e. which specific features are associated with the new purpose). Only if it can be concluded that the use involves "new means of realisation" in the form of technical steps which are not disclosed in the prior art, can the claim be considered to be novel. By contrast, if the means of realisation for achieving the new purpose is explicitly or implicitly anticipated by the prior art, then novelty cannot be established by the new use, because the novelty of the claimed invention only resides in the mind of the person carrying it out (i.e. it is subjective and not objective).

The proprietor also argued that no evidence had been presented that the cited prior art implicitly disclosed the new use/method. This is however not convincing, because, as indicated above, the only means of realisation required to obtain the stabilising effect is the addition of a substance as defined in claim 14 to a composition including lipase and a soil-release polymer, a step which is clearly anticipated by any exemplary composition including one of the inhibiting substances such as boric acid, a soil-release polymer and lipase.

The subject-matter of claims 12 and 14 is therefore not novel in view of example F in table VII of document D9.

3. Auxiliary requests 1 to 3 - Novelty

3.1 Claims 12 and 14 of auxiliary request 1 and claims 11 and 13 of auxiliary requests 2 and 3 being identical to claims 12 and 14 of the main request, the same argumentation and conclusions presented for those claims apply to these requests, which are therefore not allowable for lack of novelty with respect to document D9.

4. It follows from the above considerations that none of the claims requests meets the requirements of Article 54 EPC and that the appeals of the opponents succeed.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The patent is revoked.