Key points
Non-medical second use claim
- Claim 1 of the patent is a use claim of certain compounds (melamine derivatives) as "as an adhesion enhancer in [a polymer jacket of] an elevator load bearing member". Inventive step is to be decided. The closest prior art is D7 disclosing the use of different compounds as flame retardant in a polymer jacket of an elevator load bearing member. The melamine derivatives of claim 1 are well-known flame retardant. “The use of any of the specific melamine derivatives instead of melamine in a polymer jacket of D7 for their well known flame retardant effect would thus not appear to involve an inventive step.” The question is whether the use feature "as an adhesion enhancer" provides for inventive step. The opponent bascially considers the effect of enhanced adhesion not credible but faces the procedural problem that Art.100(b) is a fresh ground of opposition.
- “the use of these melamine derivatives [the compounds] as an adhesion enhancer is not known in the prior art, as also acknowledged by the [opponent]. Their use as an adhesion enhancer could thus be considered to involve an inventive step, on the proviso that this use were acknowledged to be a limiting functional feature of the claim within the meaning of G2/88”
- “The Board considers that [G2/88 hn.3] establishes two conditions for interpreting a claimed new purpose (reflecting a new technical effect) as a functional technical feature of the claim which may serve to distinguish the subject-matter over the prior art. Besides the condition that the technical effect has not been made available to the public before the relevant priority date of the application at issue, it is also required that the technical effect in which the claimed use resides, is "described" in the patent”
- “The present decision thus hinges on the interpretation of the expression "described in the patent" used in G 2/88. The two extremes which are conceivably covered by this expression appear to be, on the one hand, i) that the new technical effect must be described in the patent to such an extent that the skilled person understands that the effect is indeed achieved or that the effect is at least plausible, as essentially argued by the appellant as being the relevant standard, or, on the other hand, ii) that the wording of the technical effect is only required to be supported, e.g. merely stated in the description. ... Option ii) resembles the condition of support of the claims by the description according to Article 84 EPC.”
- I'm not sure if all Boards would agree that merely formal support is sufficient under Art.84.
- The Board notes that there is not much case law on this point. The Board concludes that the question is “merely whether it has been described in the sense that a skilled person can recognize what technical effect is underlying the new purpose claimed” instead of considerations of whether the technical effect is sufficiently credibly or plausibly described in the patent.
- The Board finds that the patent describes the technical effect in that limited sense for the purposes of G2/88. Up to that point the Board does not actually decide that the effect is plausible (if I see it correctly). However, because G2/03, r.2.5.2 said that “if an effect is expressed in a claim, there is lack of sufficient disclosure” and because Art.100(b) is a fresh ground in appeal (and the patentee does not consent) (G10/91) the Board does not need to decide on the actually contested point.
Admissibility appeal
- In the case of an appeal against the rejection of an opposition, there is no reason that an appellant-opponent must rebut all issues decided by the opposition division against it. As long as the appellant sets out reasons in the appeal grounds concerning at least one of the opposition grounds considered in the impugned decision which, if found convincing by the Board, could result in setting aside the decision, the requirement of Rule 99(2) EPC is generally considered to be met.
- The appellant had requested an extended panel (Art. 21)(4)(a) EPC). The Board refuses the request. Further, if consideration of the technical issues might have arisen beyond these legal issues, the Board cannot see that the underlying matter would have required particular knowledge of molecular chemistry. The technical concepts of adhesion and polarity of molecules belong to common technical university education, not least in the field of mechanical engineering. No reason is evident why the Board's technical competence would be unable to deal with any technical matters arising in this case. Additionally it is noted, as also held by the Enlarged Board of Appeal in R 3/12 (unpublished), Reasons 2.4, that, for the sake of argument, even if the Board's decision were finally based on an imperfect understanding of the technical issues, this would have no implications for the technical qualifications of the Board members in the sense of Article 21 EPC, since this provision only implies a prescribed course of technical education of the members rather than providing a guarantee of an unquestionable understanding of a specific case. There is also no particular case law deriving from the Boards of Appeal in the field of chemistry which the present Board would not be aware of or be unable to apply where fitting. Consequently it was concluded that the nature of the appeal did not require the Board to be complemented by additional Members.
In order to decide whether a claim to the use of a known compound for a particular purpose, based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature according to G 2/88, the Board finds that G 2/88 does not require the technical effect to be described in the patent in a manner sufficiently clear and complete to make the actual achievement of that technical effect credible (Reasons 17).
This finding applies even to a case where the ground for opposition under Article 100(b) EPC cannot be considered in the appeal proceedings (Reasons 24).
If, for the assessment of inventive step, it has to be determined whether the purpose defined in the claim can be interpreted as a limiting functional feature, the question whether the technical effect is described in the patent merely involves considering whether a skilled person can recognise what technical effect underlies the new purpose claimed (Reasons 20).
Reasons for the Decision
Admissibility of the appeal
1. The admissibility of the appeal was challenged by the respondent based on an alleged failure of the statement of grounds of appeal to comply with Rule 99(2) EPC. For the reasons set out below, the Board concludes however that the requirements of Rule 99(2) EPC are met. The Board is also satisfied that all other requirements for the admissibility of the appeal have been met, noting that the respondent also did not raise any objections in that regard.
The appeal is thus admissible.
2. According to Rule 99(2) EPC the appellant shall indicate in the statement of grounds inter alia the reasons for setting aside the decision impugned.
