T 0273/23 - Purpose of the method

Key points

• The decision in this appeal against a refusal was taken rather fast: statement of grounds filed 08.02.2023 (by a professional representative), oral proceedings held 27.10.2023. The applicant is a natural person (and a patent attorney).
• Claim 1 in machine translation: "Method for positioning an art object (1) on a flowing body of water, wherein the art object (1) comprises two or more buoyant elements (3, 3 '), and at least one of the elements (3) is anchored at a position defined in the direction of flow and the other elements (3') are either also anchored or connected to one element (3)."
• The applicant argues that claim 1 is novel over D5 because in D5, the art object is positioned in a bay, which is not a flowing body of water. 
• Of note (in machine translation): "The CNN report (D5) on the artistic work "SOS (Safety Orange Swimmers)", which has been freely available to the public on the Internet since October 13, 2016, undisputedly constitutes prior art in accordance with Article 54(2) EPC represents. This report was introduced into the appeal proceedings by the Chamber with the notification pursuant to Article 15(1) RPBA dated April 12, 2023.
• The Board: "The claimed method according to claim 1 mentions positioning in flowing water only as part of a purpose of the method ("for positioning an art object on a flowing body of water"). The procedure is therefore not limited further than by the suitability in this regard. It is therefore anticipated by any other positioning method of an art object, which is inherently suitable for being used for positioning in or on a river."
• Compare Guidelines, F-IV, 4.13: "Where the stated purpose defines the specific application of the method, this purpose requires 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. Hence a method claim that defines a working method which, for example, commences with such words as "Method for remelting galvanic layers", the part "for remelting ..." is not to be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed working method (see T 1931/14 and T 848/93)."
• "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. For example, a method claim concerning the application of a particular surface active agent to a specified absorbent product and defining its purpose as "for reducing malodor" in terms of an intended technical effect is anticipated by a prior-art document describing a method having such suitability "for reducing malodor" although not mentioning the specific use"
• The Board cites T 1931/14 and reasons, in machine translation: "a purpose (here the positioning of an object in a flowing body of water) does not have a restrictive effect if this effect inevitably arises when exercised of the remaining steps of the claimed method. However, anchoring an object ultimately always leads to a fixed position of this object, so that no further (implicit) features are associated with the anchoring beyond the positioning of the object."
• The claim is held to be not novel.
• As a comment, it's not clear to me why the method is not considered to involve an implicit step of placing the art object in a flowing body of water. 

EPO 

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

  

https://www.epo.org/de/boards-of-appeal/decisions/t230273du1

Machine translation

Main application

1. The subject-matter of independent claim 1 as set out in the main request is not new within the meaning of Articles 52(1) and 54 EPC.

1.1 The CNN report (D5) on the artistic work "SOS (Safety Orange Swimmers)", which has been freely available to the public on the Internet since October 13, 2016, undisputedly constitutes prior art in accordance with Article 54(2) EPC represents.

1.2 This report was introduced into the appeal proceedings by the Chamber with the notification pursuant to Article 15(1) RPBA dated April 12, 2023.

The appellant did not object to the introduction of this additional prior art into the appeal proceedings. During the oral hearing, the content of D5's disclosure was discussed in detail with regard to the subject matter of independent claim 1, so that the complainant's right to be heard was safeguarded.

1.3 However, the complainant argued that document D5 did not anticipate the claimed method according to claim 1.

1.3.1 On the one hand, the complainant argued that D5 would only disclose an art object, but not a method for positioning it in a body of water.

This argument is unconvincing for the following reasons:

a) D5 reveals that the artwork was anchored in the Fort Point Channel Basin in Boston ("The 22 figures are anchored in water..."). Even if D5 does not explicitly mention the procedural steps that were carried out as part of this anchoring, it at least implicitly discloses a method for positioning the art object in a body of water, in which the majority of buoyant elements of the art object were anchored to the bottom of the body of water.

b) Claim 1 also does not mention any further method steps, but in particular no details of the anchoring step. Therefore, the method implicitly disclosed in D5 also falls under claim 1.

1.3.2 With reference to the Wikipedia excerpt (D6), the complainant also stated that the expert in the field of hydrology used the term "flowing water" or "streaming water" to mean a body of water with water movement that is always directed in one direction understand that it arises from the fact that water is transported from a catchment area under the influence of gravity to an outlet of the body of water into a higher-level body of water. A river is therefore, by definition, characterized by a more or less strong, directional flow of water. Depending on their size, flowing waters are, for example, streams or rivers, but not seas or lakes.

Given this understanding, the complainant came to the conclusion that the Fort Point Channel Basin in Boston, in which the art object "SOS (Safety Orange Swimmers)" was anchored and exhibited, did not, by definition, constitute flowing water within the meaning of claim 1. On the contrary, it is an arm of the sea that is closed at its end and has no inflow. Therefore, at most insignificant wind and tide-dependent surface water movements in variable directions would occur in this body of water. The Fort Point Channel Basin is therefore not a river, as claim 1 requires.

In addition, the complainant did not recognize any positioning at a fixed position in the direction of flow, since this direction of flow was not recognizable.

The complainant concluded that the subject matter of claim 1 according to the main request differs from the disclosure content of report D5 in that the art object is positioned on a flowing body of water, with at least one of the elements being anchored at a fixed position in the direction of flow.

However, in the Chamber's view, the question of whether the Fort Point Channel Basin in Boston can be considered a watercourse or not is irrelevant for the following reasons:

a) The claimed method according to claim 1 mentions positioning in flowing water only as part of a purpose of the method ("for positioning an art object on a flowing body of water"). The procedure is therefore not limited further than by the suitability in this regard. It is therefore anticipated by any other positioning method of an art object, which is inherently suitable for being used for positioning in or on a river.

b) In accordance with the established case law of the Board of Appeal (cf. e.g. T1931/14, point 2.2.4 of the Reasons), a purpose (here the positioning of an object in a flowing body of water) does not have a restrictive effect if this effect inevitably arises when exercised of the remaining steps of the claimed method. However, anchoring an object ultimately always leads to a fixed position of this object, so that no further (implicit) features are associated with the anchoring beyond the positioning of the object.

c) The Chamber therefore sees no reason why the anchoring of the elements of the art object in the Fort Point Channel Basin in Boston, as disclosed in D5, should not be suitable for positioning this art object on a flowing body of water.

d) Anchoring the art object in a body of water without a changing direction of flow would inevitably always lead to a position fixed in the (single) direction of flow of the body of water. The flowing water always aligns the anchored objects "in the direction of flow" and holds them in this position.

1.3.3 The complainant argued that the method of anchoring a floating object in a flowing body of water, in which by definition significant currents and turbulence occur, is not the same as anchoring in the essentially stagnant body of water of the Fort Point Channel Basin.

The Chamber does not agree with this assessment, since the water of a flowing body of water, which is not defined in detail in claim 1, can flow away largely calmly and without significant currents and/or water turbulence. Since claim 1 does not specify the strength of the current and in the area of ​​bays connected to the open sea such as the Fort Point Channel Basin, strong water currents caused by tides or wind can also occur, which are the currents expected on calmer streams and rivers can also be far exceeded, the Chamber sees no reason why the anchoring at the Port Point Channel Basin in Boston could not also be used in an unspecified fly water without modification. On the contrary, the anchoring used in D5 also seems to be fundamentally suitable for flowing water.

1.4 For the reasons explained above, citation D5 therefore detracts from the novelty of the method of independent claim 1 according to the main request.