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T 19/18 - A statement of purpose without support by structural features, does not develop any distinctiveness over the PA

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Brief outline of the procedure

The proprietor appealed the decision of the OD to maintain the patent according to AR 3.

The opponent withdrew its appeal.

The board confirmed the OD’s decision according to which claim 1 as granted lack of N over D1=DE 10 2006 005 765 (First document X,Y in the ISR established by the EPO!).

Eventually the appeal was dismissed and the maintenance as decided by the OD was confirmed.

The claims at stake

Claim 1 as granted as well as of AR 1 and 2 related to a “Coating machine component (1), particularly a bell cup for a rotary atomizer…. a functional element (5, 6; 8) for mechanical stiffening of the coating machine component (1)…… the functional element (5, 6; 8) is a coating (5, 6; 8) which is at least partially applied to the base body”

Claim 1 of AR3 related specifically to a “Bell cup for a rotary atomizer” and all reference to a general “coating machine component” was replaced by a reference to a bell cup for atomizer.

The proprietor’s argumentation

The proprietor’s argumentation was based on a certain narrow understanding of the feature “for mechanical stiffening”, which was only apparent when recourse was made to the description.

The proprietor’s novelty arguments were thus based on the fact that the subject-matter of claim 1 was to be interpreted narrowly and that it was in this narrow interpretation that the difference to the disclosure of D1 arose. The distinctiveness of the disputed feature thus arose from the narrow claim interpretation.

The proprietor argued that the OD’s decision on AR 1 and 2 was based on an incorrect interpretation of the feature “for mechanical stiffening” and referred to its argumentation on the MR in order to avoid repetition.

The board’s position

For the board, the disputed feature “for mechanical stiffening” is a functional feature or indication of purpose which would only be relevant as a distinctive feature in the claimed product compared to the disclosure of D1 if it were supported by corresponding structural features in the claim.

However, corresponding structural features from which a distinctiveness of the subject-matter of the claim over D1 would arise were not to be found in claim 1 as granted.

Contrary to the proprietor, the board therefore understood the wording of claim 1 broadly.

For the board, on a broad understanding of claim 1, no distinguishing feature from the disclosure of D1

was discernible.

By not structurally formulating the feature at issue, the wording of claim 1 is broad, but nevertheless clear.

Thus, the meaning and scope of the disputed feature follows from itself.

Consequently, according to the OD’s findings, there is no reason for the skilled person to use the description to interpret claim 1.

The OD found under points II.4.1.2 and II.5.1.2 of the contested decision that the respective subject-matter of claim 1 according to AR1 and 2 was not new compared to the disclosure of D1.

The board agreed with this finding as in both AR the alleged difference “for mechanical stiffening” was also present.

Request for referral to the EBA

The patent proprietor requested that if the Board did not follow its arguments on claim interpretation, the following question be referred to the Enlarged Board of Appeal:

“Can the claim interpretation in the context of the examination for patentability be based on the rules of interpretation under Art 69 and the associated Protocol on Interpretation?”

Rejection of the request for referral

The Board did not see any basis for referring the legal question formulated by the proprietor to the EBA in view of the lack of relevance of the question referred for a decision in the present case, cf. Case Law of the Board of Appeal, 10th edition 2022, V.B.2.3.3.

For the board, the question directed by the proprietor to a claim interpretation is not relevant for the decision on the merits. Rather, what matters in the present case is how the feature “for mechanical stiffening” is to be understood.

As explained, the disputed feature is a statement of purpose which, without being supported by structural features, does not develop any distinctiveness to the disclosure of D1.

The claimed subject matter is in itself clearly formulated and therefore, contrary to the view of the proprietor, does not require any interpretation.

Thus, the requirement formulated by the patent proprietor “in claim interpretation in the context of the examination for patentability” is not fulfilled, so that the formulated question is not decisive for the dispute.

A referral to the EBA was thus not necessary for the decision of the case within the meaning of Art 112(1)(a) EPC.

Comments

The conclusion reached by the board is fully justified.

For a start there is a long line of case law (I purposely avoid speaking about “established” case law) according to which an indication of purpose for a device/apparatus is only limiting as far as it necessarily implies specific technical characteristics or features of the device/apparatus.

In the present case, the feature although broad, was not unclear, but in the absence of specific technical characteristics/features it could rightly not be considered limiting.

There is as well a long line of case law according to which if a claim is clear, there is no recourse on the description, or that Art 69 and its Protocol is for the national judge and not for the EPO (exceptions permitted).

Important message:

A statement of purpose for a device/apparatus without support by structural features, does not develop any distinctiveness over the PA. This is certainly not a scoop, but it is good to be reminded of it.

The situation is different when the statement of purpose for a device/apparatus necessarily implies technical characteristics or features. I think here of a phishing hook vs, a crane hook as trivial example.

I also refer to the Guidelines F-IV, 4.13.1

For claims to an action I refer to Guidelines F-IV, 4.13.3. The statement of purpose is in general limiting, but this is not always necessarily the case.

https://www.epo.org/law-practice/case-law-appeals/recent/t180019du1.html

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11 replies on “T 19/18 – A statement of purpose without support by structural features, does not develop any distinctiveness over the PA”

Panda grassosays:

At the practice before the EPO the term “for” should be regarded as “suitable for”. If D1 invention is also suitable for the purpose in the contested application, the D1 should deprive claim 1 of novelty. Maybe this is another way to explain the decision of the Board?

DXThomassays:

Dear Panda grasso,

I can fully agree with you.

It corresponds to a long line of case law to consider “for” as meaning “suitable for”.

It is interesting to note that “suitable for” applies to claims for entities and to claims for actions.

If the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it deprives the claim of novelty, e.g. T 1454/14.

In general, the term “for” is limiting in case of a claim to an action. For a claim that is directed to a method or process, the indication of an intended use of this method may at most be seen as limiting to the extent that the method has to be suitable for that use. Such a claim would therefore be anticipated by a prior-art document describing a method having such suitability although not mentioning the specific use, cf. T 304/08 or T 1931/14.

Daniel, I love your example, that a crane hook is different from a hook used in phishing. Who could argue with that? But what about a fishing hook and a crane hook? That might be a bit more arguable. I mean, what if you are marooned on a desert island with your family and the only hook and line that you have available is the one on your child’s toy crane. Is that a hook “for” fishing? If so, does it deprive of novelty my claim to a new fishing hook design?

DXThomassays:

Dear Max Drei,

I admire your vivid imagination but I cannot follow you with the hook for a toy crane vs. a hook for fishing.

It happens that my grandson has a toy crane and a toy helicopter with a winch, at the end of which there is a hook.

The hook for both toys is made of plastic, has a rounded end, so that the child cannot hurt himself with the hook. Furthermore it is relatively thick, around 3 mm in diameter.

I would thus consider that, prima facie, such a hook for a toy crane cannot deprive a claim for a proper fishing hook design from its novelty. It is simply not “suitable for” the intended purpose. A fishing hook is made of metal and has a sharp end. Do you need any more arguments?

The people stranded on the desert island should thus look first whether there are animals on the island, rather than trying to go fishing with a totally inappropriate device. May be the line could be used for trapping animals but not as a fishing line with the original hook.

Survival kits often comprise a fishing line. This line is connected to a proper fishing hook and certainly not to a thick plastic hook.

OK, Daniel. You convinced me. No matter how tasty the bait you load the child’s crane hook with, you will NEVER catch with it any fish, even if the fish in the sea routinely take the bait. Either the fish is too small to get the hook in its mouth or else the fish is too big, too strong to be caught by a plastic hook and line. Good try but, bad luck, marooned family. Your hook is not “suitable” for catching fish and no EPO Examining Division will EVER be able to prove it to be so.

Now, another enquiry concerning “suitable for”. Set aside obviousness. Consider only novelty. Is there any difference in the scope/meaning/ambit between these two claims A and B?

A: A cricket ball, comprising XYZ

B. A ball “for” playing cricket, comprising XYZ.

Given that i) a tennis ball comprising XYZ is known, ii) children often play cricket using a tennis ball and iii) The Rules of the Game of Cricket lay down a detailed specification for the ball, and that specification excludes a tennis ball.

If there is a difference, what does that teach us about how to draft purpose limitations in claims?

DXThomassays:

Dear Max Drei,

If a ball comprising X,Y,Z is known, then, in my humble opinion, any ball comprising X,Y,Z will be deprived of novelty, irrespective of the use of the new ball or that of the original ball.

The fact that Rules of the Game of Cricket lay down a detailed specification for the ball, and that specification excludes a tennis ball, is in my opinion irrelevant as far as patent law is considered. The difference lies in the labelling of the ball, but does not change the ball as such.

The applicant of claims A or B has simply given a new label to the ball comprising X,Y,Z. If he considers it is suitable for cricket in spite of the Rules of the Game of Cricket, it is his good right, but at the same time his problem.

What matters is that both balls are identical due to the features X,Y,Z independently of what some rules of cricket resp. tennis may say.

I quote the Guidelines, F-IV, 4.13.1: if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it deprives the claim of novelty. A “mould for molten steel” cannot be anticipated by a “mould for ices cubes”.

A ball comprising X,Y,Z is suitable for playing tennis, cricket or any other ball sport. It can even be used by kids to play football, knowing well that a tennis ball is certainly not allowed when “officially” playing football.

The formulation “suitable for” cannot be made dependent on some extraneous rules which have nothing to do with patent law. “Suitable for” relates to technical features and not regulatory conditions.

Purpose limitations in claims have to relate to technical features and not to regulatory ones.

Daniel, of course I your distinction between “technical” and “regulatory”. Does the job nicely although it isn’t absolute, is it. What about a new medical use for a known medicament (even if a known surgical instrument, licensed only for performing a specific and designated surgical procedure cannot be rendered new by an inventive new use for it).

Ideally, patent law should reflect what ordinary people equate with commonsense. Show a child a tennis ball and ask if it is “suitable” for playing football Answer: YES. But ask instead if it is “a football” and every child would find the question absurd and instantly answer NO. The child has no need to consult FIFA Rules on what constitutes a football. The background universal general knowledge of the child is sufficient.

Accordingly, I still think that a claim to a “cricket ball with XYZ” is not deprived of novelty by a tennis ball with XYZ. Very probably obvious though.

DXThomassays:

Dear Max Drei,

It is manifest that in a claim for a substance/composition used in a medical method under Art 54 (4 or 5), the intended use is always limiting. It is actually a functional feature limiting the claim. Otherwise there would be no N for the first and no IS for a further medical use.

When talking about a product, even if said product is used in the medical field, but said product is not a substance or a composition in the meaning of Art 54(4 and 5) then the purpose is irrelevant and novelty cannot be gained by indicating a purpose. Just have a look at T 1069/11, Reasons Point 3.3.2 to 3.3.5. T 1069/11 actually confirms T 227/91.

I am not really convinced “that a claim to a “cricket ball with XYZ” is not deprived of novelty by a tennis ball with XYZ”. I do however agree with you that in any case the subject-matter of such a claim is more than obvious.

It is debatable to consider that patent law should reflect what “ordinary people” equate with common sense, as at least in patents we have to do with a person skilled in the art.

The subject-matter of a claim lacks N if it is derivable directly and unambiguously by the skilled person from the prior art.

Deciding whether X,Y,Z is found in the prior art and in the claim irrespective of the purpose is the only action which needs to be carried out, as in your example X,Y,Z are such that they render the ball suitable for different sports.

Although a skilled person is a notional person, I would not considered that it is a child or is represented by “ordinary people”.

Daniel, forgive me for labouring the point, but your answer has not yet freed me from my conviction that it matters what one calls the article that is the subject of the claim, and can make a difference for novelty. How about a claim to “A scalpel with XYZ.” and D1 is a 500 year old sword with XYZ, exhibited in a museum in, say, Istanbul. Could a doctor in desperation, with nothing else available, use the sword as their scalpel. I mean, when does suitability end?

Presumably you just ask a surgeon (not a child, and not a football player or administrator) whether the sword is suitable, right? Or will the Division or Board members need no evidence from an expert about the level of knowledge of a hypothetical person skilled in “the art”?

DXThomassays:

Dear Max Drei,

It is always possible in theory to push a discussion to the absurd.
I fear we have reached this point.

I must confess that I am at my wits end and if I have not been able to convince you, I regret it, but you have by no means convinced me either.

I can agree with you that in theory “it matters what one calls the article that is the subject of the claim”.
Where I cannot agree with you is that what you call the article “can [in all its generality] make a difference for novelty”.

What you call an article is nothing more than a label.
Only if the label implies specific technical features it possible to consider the label as being a functional limitation to the subject-matter of the claim.
We are back to the fishing hook or the mould for molten steel.
Sorry for insisting on my side, but a label remains a label and does, a priori, not alter the substance of the object.

That a sword can be used as a scalpel is my opinion possible, certainly in theory.
It primarily depends on the dexterity of the surgeon.
I would however not like a surgeon to use a sword as scalpel on myself or on my beloved ones, but this is not relevant as far as patent law is concerned.

If on the other hand if the scalpel is only defined by X,Y,Z it is difficult to consider that the sword having exactly those features is not depriving the scalpel from novelty.

Anything slightly bigger than a dagger can be called a sword. It could certainly be a sword for a child. Whether the sword is 500 years old is not relevant under European practice as there is no time limit to the age of the prior art contrary to the old English patent law.

The doctor could thus use this “sword” as a scalpel, albeit with difficulty, but at least excising some part of the skin is always possible.
Its sounds horrible, but decapitating a mammal or letting it bleed to death is possible with a scalpel or a sword.

Any attempts by parties to request a board to get an expert opinion pursuant Art 117(e) has always been rejected.
See for instance T 1754/18 (Reasons, Point 5)

As composed of at least two technically qualified members the boards consider themselves in a position to decide without hearing an expert.
See T 38/15 (Reasons, Points 5-8) or T 435/17 (Reasons, Point 4.2).

This is not the position of the English judge, who will seek expert advice.
That the expert is subject to cross examination is normal in the UK, but would not be normal on the continent.

This stance applies mutatis mutandis to an ED or an OD as those comprise at least three technically qualified people.

You might not consider it proper that a board or a first instance division consider itself an expert, but this is the reality at the EPO.
At least a board or a first instance division can define the notional person skilled in the art.

Daniel, sometimes extrapolating to the absurd can advance the debate. I am imagining a manufacturer of tennis balls with a patent on a clever improvement asserting their claim to a “Tennis ball with XYZ” against the maker of the special new football about to be used in the next round of the FIFA World Cup. The infringer would deny that their football is a tennis ball, but what would the court decide?

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