T 0248/85 - Product by process claims / Selection of closest prior art - #53

Citation rank: 53
No. 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").
2. An objective assessment of inventive step starting from the closest prior art implies that the latter has been positively identified and considered.

The full text of the decision can be found here.

T 0150/82 - Product-by-process claims / References to the description - #67

Citation rank: 67
No. of citations: 73

T 150/82 dealt with two equally interesting issues: Firstly, it looked at the conditions under which claims may use references to the description or drawings to express features that are otherwise difficult to express. Secondly, T 150/82 also looked at conditions under which "product-by-process claims" are admissible, i.e., claims defining a product through the process of their manufacture.

1. References in the claims to the description
In the underlying case, claim 17 read: "A process in accordance with claim 1 substantially as described in the foregoing Example I". The Board found that this type of claims, which is referred to as "omnibus claims" in the UK practice, would under the EPC only be allowable under very exceptional circumstances. Claims with reference to the description or drawings would normally infringe the then applicable R. 29(6) EPC1973 (now R. 43(6) EPC), which Rule allows references to the description or drawings only "where absolutely necessary". In the case at hands, there was sufficient verbal description of the respective features present, so that the "absolutely necessary" requirement was not met. The omnibus claim was not allowed.

Comment: References to the description, and in particular to the drawings, are nevertheless be useful in some cases. For example, where the wording of a claim is not adequate to capture a new and inventive geometry of, let's say a screw head, and also the description does not include wording that would allow to clearly distinguish the claim over the prior art; in such situations it may be useful and justified that reference to a drawing is included in the claim ("Screw head having features A, B, C, substantially as shown in Figure X").

2. Product-by-process claims
Another part of T 150/85 deals with product-by-process claims. The Board confirmed a statement in the then current Guidelines that product-by-process claims can be used in EPC practice:

"The Guidelines for Examination in the EPO (C-III 4.7b) [see F-IV, 4.12 in the 2017 Guidelines] allows claims for products defined in terms of a process of manufacture provided the products themselves fulfil the requirements for patentability. This may well be the only way to define certain natural products or macromolecular materials, of unidentified or complex composition, which have not yet been defined structurally." (point 8 of the reasons)

The Board points out, however, that before such claims are allowable their patentability, as products, must be established.  

T 150/82 is most often cited to refute an argument of a party that their product-by-process claim would be new and inventive, because the process of its manufacture is new and inventive. The counter argument made is then that a process feature can only contribute to the novelty of a product claim insofar as the process feature gives rise to a distinct and identifiable characteristic of the product.

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Headnotes:

I. Claims relying on references to the description in the specification in respect of all their technical features (known in the patent practice of the United Kingdom as "omnibus" claims) are unallowable as contrary to Rules 29(4) and 29(6) EPC [now Rule 43(6) EPC], unless absolutely necessary, e.g. when a plurality of conditions would not lend themselves to verbal expression without such a reference. The onus is on the applicant to show such exceptionality.

II. Claims for products defined in terms of processes for their preparation (known as "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 some other testable parameter.

The full text of the decision can be accessed here.