Citation rank: 53No. of citations: 88
T 248/85 dealt with two issues: Fistly, it commented on the question of novelty and inventive step of product-by-process claims. Secondly, it considered how the closest prior art is to be selected under the problem-solution approach.
1. Product-by-process claims
Claim 1 in the underlying examination case was directed to "[a] method of radiation processing a product made at least in part from [...]". Claims 4 and 5 were directed to "[Irradiated products] characterised in that it was actually made by and is the direct product of the process claimed in any one of Claim 2 or Claim 3". The Examining Division held method steps 1-3 allowable, but refused the product-by-process claims (4 and 5).
The applicant appealed and requested that the decision regarding the product-by-process claims be reviewed.
T 248/85 recalled that in the earlier case T 150/82, the Board already decided that product-by-process claims are admissible only if the products themselves fulfil the requirements for patentability and there is no other information available in the application which could enable the applicant to define the product satisfactorily by reference to its composition, structure or other testable parameter (T 248/85, point 3 of the reasons).
They also observed that in the present case, the applicant apparently had tried to circumvent this interpretation by using wording borrowed from Art. 64(2) EPC, namely by requiring that the product is a "direct product" of the process defined in the process claims. Concerning the novelty of the product so defined, the applicant admitted that the products claimed were not distinguishable from the products of the prior art, but they argued that novelty was conferred by the process of the relevant method claims.
The Board did not accept this interpretation. T 150/82 was strictly applied to the instant claim wording. The product-by-process claims were thus considered non-novel.
2. Closest prior art / inventive step
As briefly mentioned above, the decision of the Examining Division (ED) found that method claims 1-3 were new and inventive; only product-by-process claims 4 and 5 lacked novelty. The appellant thus requested that only claims 4 and 5 be reviewed. In the event that the Appeal Board confirmed the ED's decision, the appellant requested that a patent be granted on the basis of method claims 1-3.
The Board decided otherwise. Firstly, they confirmed the ED's finding that the product-by-process claims were not novel. However, instead of granting a patent on the method claims 1-3 they reviewed the ED's decision regarding inventive step of claims 1-3. They observed that the ED simply accepted the state of the art mentioned in the description to be closest prior art, without even looking at the documents in detail, and without establishing which problem was solved by the distinguishing features of the invention over that prior art. The Board stated that it is necessary to define the problem underlying the alleged invention by comparison of the technical results achieved by the claimed invention with those achieved by the designated closest state of the art (point 11 of the reasons).
The Board therefore concluded that the problem-solution approach applied by the ED was flawed and remitted the case back to first instance for (proper) examination of method claims 1-3.
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Headnote:
1. The provisions of the EPC governing the requirements for patentability and those relating to the extent of protection fulfil different functions. A claim directed to subject-matter which, though coming within the extent of protection provided by the EPC, does not meet the requirements for patentability laid down in Articles 52 to 57, is not allowable. A known product is not rendered novel merely by means of further definition (as a "product of process").The full text of the decision can be found here.
2. An objective assessment of inventive step starting from the closest prior art implies that the latter has been positively identified and considered.
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