Friday, 20 April 2018

T 1931/14 - Suitable for?



This case concerns an appeal by a patent proprietor against a decision of the opposition division revoking his patent on the ground of lack of novelty of claim 1.

Claim 1 reads: "A process for producing oxygen to fuel an integrated gasifier combined cycle (IGCC) power generation system  at a rate which corresponds to the power demand of the IGCC power production...wherein...
(a) during reduction of the power demand from the IGCC...liquid oxygen is produced in excess of that required by the IGCC...wherein...
(b) during an increase in the power demand from the IGCC system excess liquid oxygen is withdrawn..."

In line with T 848/93 (GL (2017), F-IV, 4.13), the BoA came to the conclusion that the stated purpose of the process "to fuel an IGCC" is not to be interpreted as a mere suitability of the process for that stated purpose but rather as functional feature of the process. In other words, the BoA sees the feature "to fuel an IGCC" as a limiting feature of the process claim.

Furthermore, the BoA stated that two claimed steps (a) and (b) are so inextricably linked to such stated purpose that the claim must be read as to be limited for it. 

Therefore the fact that the document used in opposition for attacking claim 1 on the ground of novelty did not mention the same application of the claim "to fuel IGCC systems", would appear to be sufficient for the BoA to establish novelty of claim 1 over said document.   

Summary of Facts and Submissions
I. The appellant (proprietor) lodged an appeal received on 17 September 2014 against the decision of the opposition division dispatched on 9 July 2014 on the revocation of the patent EP 1 053 392, and simultaneously paid the appeal fee. The statement setting out the grounds of appeal was received on 19 November 2014.
II. The opposition was based on Article l00(a) together with 52(1), 54(1) and 56 EPC and Articles 100(b) and (c) EPC. The Opposition Division came to the conclusion that the subject-matter of claim 1 of the patent as granted was not novel, and that the auxiliary request lacked clarity within the meaning of Article 84 EPC. In its decision the division considered inter alia the following document:
D6: US 5 265 429
III. Oral proceedings were held on 21 February 2018, in the absence of the duly summoned respondent, who announced with letter of 9 October 2017 that it will not attend.
IV. The appellant requests that the decision under appeal be set aside, and that the patent be maintained as granted (main request) or in an amended form on the basis of the auxiliary request filed 20 May 2014.
- The respondent requests in writing that the appeal be dismissed.
V. The wording of the relevant independent claims as granted reads as follows:
"A process for producing oxygen to fuel an integrated gasifier combined cycle power generation system at a rate which corresponds to the power demand of the integrated gasifier combined cycle power production during peak demand periods while maintaining peak efficiency when the integrated gasifier combined cycle power and generation system operates at varying power production, comprising
cryogenically distilling air in an air separation unit comprising distillation means (5), heat exchange means (8) and a single liquid oxygen cold storage vessel (21);
wherein during reduction of the power demand from the integrated gasifier combined cycle system, relative to its nominal power production demand, liquid oxygen is produced in excess of that required by the integrated gasifier combined cycle system and such excess liquid oxygen is collected and stored in the liquid oxygen cold storage vessel (21) of said air separation unit; and
wherein during an increase in the power demand from the integrated gasifier combined cycle system, relative to its nominal power production demand, in an operation mode (i) excess liquid oxygen is withdrawn from the liquid oxygen cold storage vessel (21) and vaporized at elevated pressure by means of a liquid oxygen pump (31) and a vaporizer (33), and
in another operation mode (ii) excess liquid oxygen is withdrawn from the liquid oxygen cold storage vessel (21) and combined with liquid oxygen from the distillation means (5) not in excess and vaporized at elevated pressure in indirect heat exchange with the air undergoing cryogenic distillation."
VI. The Appellant's arguments are as follows:
The decision of the Opposition Division ignores the wording of claim 1 requiring to fuel an integrated gasifier combined cycle system. The decisions T 0848/93 and T 0304/08 are based on different facts and cannot be regarded as divergent decisions.
VII. The respondent's arguments are as follows:
The process for producing oxygen disclosed in D6 is suitable to fuel an integrated gasifier combined cycle system, thus the process disclosed in D6 is novelty destroying for the subject-matter of claim 1. T 304/08 also confirmed the lack of novelty where the (presumed) novelty resided solely in the use of an otherwise known method. A referral to the Enlarged Board of Appeal should be considered if this decision diverges from the older decision T 0848/93.
Reasons for the Decision
1. The appeal is admissible.
2. Main request - Novelty
2.1 Claim 1 as granted defines a process for producing oxygen to fuel an integrated gasifier combined cycle power generation system. Thus the process concerns the production of oxygen for the purpose of fuelling a power generation system of the integrated gasifier combined cycle type, commonly referred to by its acronym IGCC.
The impugned decision concluded that the process defined in claim 1 lacked novelty on the consideration that claim 1 is merely related to a "process for producing oxygen" that is restricted to the production of oxygen in a cryogenic air separation system, while the stated use "for fuelling an IGCC plant" did not limit the claimed method but merely indicated its suitability for that purpose.
2.2 Claim 1 explicitly refers to a process and therefore belongs to the category of method claims that define their subject-matter in terms of physical activities (cf. G 2/88, OJ EPO 1990, 93, Reasons 2.2).
2.2.1 According to established case law, where a claim concerns an apparatus differing from a known apparatus only as regards the use indicated, then the use is not an apparatus feature, meaning that two apparatuses (differing only in the intended use) are identical in terms of structure. If the known apparatus is suitable for the claimed use, the claimed invention lacks novelty. If, however, the claim is for a process, the situation is not comparable. In such a case, the use feature is a functional process feature comparable in category with the other features (steps) of the process (Case Law of the Boards of Appeal, 8th edition 2016, I.C.8.1.3 c); T 848/93, point 3.2 of the Reasons). In that respect it should be observed that the passage F-IV 4.3 of the Guidelines for Examination in the EPO referred to by the respondent is also based on the same case law, and also emphasises that a method claim is to be interpreted differently from a product claim. The Guidelines base their example on the method that was decided upon in T 848/93, namely a method for remelting galvanic layers, and state that the part "for remelting ..." should not be understood as meaning that the process is merely suitable for remelting galvanic layers.
2.2.2 The respondent also refers to decision T 304/08, that concluded the purpose of a claimed method not to be a functional feature thereof. Pointing at this apparent contradiction, the respondent also stated that there may be an occassion for a referral to the Enlarged Board of Appeal, but did not submit any formal request to this end. The Board however is unable to identify any contradiction between the two decisions. T 848/93 decided that a method for remelting galvanic layers on circuit boards encompassed a functional step of the method (T 848/93, point 3.2), in other words the claimed purpose "for remelting galvanic layers on circuit boards" required that the method actually be carried out by melting a galvanic layer on a circuit board. In that case the claimed purpose defined the specific application or use of the method, and such application or use in itself represented a limitation of the method.
2.2.3 The situation in T 304/08 is quite different. There the method concerned application of a particular surface active agent to a specified absorbent product and defined its purpose "for reducing malodor " in terms of an intended technical effect. That effect would distinguish the claimed method from the prior art, all other features being known therefrom. The Board however held, reasons 3.3.2, that such an effect might represent a limiting functional technical for the use of a substance as in G2/88 and G6/88 (OJ EPO 1990, 93) but that this did not apply to a method for producing a product. It could at best be interpreted as meaning suitable for (producing that effect); in any case (reasons 3.3.5) the effect was found to be inherently present in the prior art.
2.2.4 The two decisions demonstrate that in the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method and implicit therein. Where the stated purpose defines the specific application of the method, in fact it requires certain 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 (e.g. no actual re-melting of a galvanic layer would occur). In this manner the stated application represents a genuine technical limitation of the method and the claimed method must be applied in that manner. 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 (e.g. the malodor is inherently reduced) and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.
2.2.5 In view of the different situations treated in both decisions, the Board does not regard them as reaching divergent conclusions for a similar factual condition. The Board therefore sees no need for a referral to the Enlarged Board of Appeal under Article 112(1)(a) EPC. Apart from that, the a referral is also not necessary because the Board does not require it for its decision, given that the novelty of the claim is apparent on the basis of other features as well, see point 2.3 below.
2.2.6 The Board further concludes that in a manner analogous to the case underlying T 848/93, in the present case the stated application to fuel an IGCC represents a functional limitation of the claimed method.
2.3 In addition, the claimed method includes explicitly defined method steps that are specifically limited to and in fact further define the particular application to producing fuel (in an amount necessary) for an IGCC. These steps are the following:
"wherein during reduction of power demand from the integrated gasifier combined cycle system .... liquid oxygen is produced in excess of that required by [that] system"
"wherein during an increase in power demand from the integrated gasifier combined cycle system... excess liquid is withdrawn ..."
These two steps explicitly instruct the skilled person to produce oxygen or withdraw liquid oxygen depending on the power demand of the IGCC, that the process for producing oxygen would need to fuel. In that these two steps are conditional to (reduction or increase in) IGCC power demand, they are limited thereby. In the Board's opinion at least these two steps indicate that the claimed process for producing oxygen cannot be regarded in isolation of the ultimate use of the oxygen produced to fuel an IGCC power system. Rather, the process and the two steps are to be carried out depending on the power demand of the IGCC power system, indicating that claim must be understood as relating to the specific application of the oxygen production process to IGCC power generation system. These parts of the claim thus define functional features of that process i.e. physical activities of steps that the process has to perform in order to fuel the IGCC as a function of its power demand: on the one hand during low demand from the IGCC to collect and store the excess oxygen produced, and during increased power demand from the IGCC to operate in two different operation modes i) and ii) defined in the claim.
Indeed, the claim even seems to imply the necessity to monitor the power demand of the IGCC and to forward this information to the oxygen production and distribution system.
2.4 In D6 there appears to be no mention, direct or otherwise, of application to IGCC power systems in D6, much less that oxygen should be produced or withdrawn depending on power demand from the IGCC power system as required by the above two steps. D6 discloses a cryogenic air separation system for producing gaseous oxygen and seeks to more effectively employ liquid oxygen storage to alleviate or dampen fluctuations in a cryogenic rectification plant operating rate (col 1, lines 50-55). As possible user of the oxygen thus produced, a steel mill is mentioned as an example in column 5, line 4. Therefore neither the specific application of fuelling an IGCC, nor the steps of taking into account a power demand from an IGCC to operate the process for producing oxygen of D6 is directly and unambiguously disclosed, nor has this indeed been argued by the respondent opponent.
2.5 It may thus be left undecided, whether or not the liquid storage tank 650 of D6 represent the single liquid storage vessel according to claim 1, or whether the liquid oxygen withdrawn from that vessel is further processed according to both operation modes i) or ii) defined in claim 1. Indeed the absence of any explicit or implicit acquisition or record of the power demand of an IGCC to initiate any of the measures or steps defined in the claim suffices in itself to establish novelty. This would also be the case even if, as assumed be the respondent and opposition division, the process for producing oxygen disclosed in D6 would also be suited to feed an IGCC system.
2.6 For the above reasons, the Board concludes that the decision was wrong to conclude lack of novelty of the
claimed process vis-a-vis D6, and the subject-matter of claim 1 according to the main request as granted is thus new in respect of this cited prior art brought forward under Article 54(1) with 54(2) EPC.
3. Remittal
The Board has considered the opposition ground based on Article 100(a) together with 52(1), 54(1) EPC decided by the Opposition Division in its decision and challenged in the appeal, and has reached the conclusion that claim 1 of the main request is thus allowable in this respect.
However, the Opposition Division did not examine and decide the opposition ground of inventive step also raised in opposition in relation to many different combination of documents. The Board therefore considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution. This is particularly so as the appellant also agrees to the remittal, and the respondent has not objected thereto.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
This decision T 1931/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T193114.20180221  The file wrapper can be found here. Photo by geralt obtained via Pixabay under CC0 license (no changes made).

7 comments :

  1. Interesting decision, thank you. Isn't the last sentence of the catchword ("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 (e.g. the malodor is inherently reduced) and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.") in direct contradiction to G 2/88, 10.3, at least as a categorical statement:

    10.3 The answer to question (iii) may therefore be summarised as follows: with respect to a claim to a new use of a known compound, such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in Article 54(2) EPC, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public.

    I note that the independent claims of the opposed patent do not refer to "a new use of a known compound" and for such Independent claims the catchword may not be in contradiction to G 2/88.

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  2. I agree to the reasoning of the BoA that in the present case, the feature "to fuel an integrated gasifier..." is to be seen as a limiting feature. In this present case, the features recited in a) and b) of the claim leave no doubt that there must be a connection to power demand from the IGCC.

    Here, it is indeed questionable if G 2/88 is pertinent because G 2/88 apparently related to "use"-claims, i.e. "use of a product for x to achieve an effect y", and not strictly to "process"-claims, i.e. process for x to achieve an effect y".

    However, if pertinence is assumed, I am inclined to join the side of the present BoA and not the EBoA in G 2/88: I think the last half-sentence of point 10.3 of the reasons in G 2/88 is problematic and does not reflect current practice regarding implicit disclosures:

    "...then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public."

    If a technical effect is seen as a functional feature and said feature is inherently present in a product or process of the prior art, it is my optinion that the (functional) feature is anticipated and the product or process is not novel over the prior art.

    In short, the important question to ask in my view is: Is the technical effect (functional feature) an inherent feature of a prior art product or process or not. If not, the technical effect (functional feature) establishes novelty. If yes, there is no novelty.

    What do you think?

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  3. Interesting discussion. The last sentence of the catchwords of the present decision implicitly refers (last sentence of reason 2.2.4) to decision T 304/08. Interestingly, T 304/08 was only cited in the previous version of the Guidelines (GL (2016), F-IV, 4.13). In T 304/08 the BoA noted under reason 3.3.2 that

    "The decisions G 6/88, as well as G 2/88 (OJ EPO, 1990, 93), pertain to claims which are directed to the use of a known substance for a novel purpose. These decisions make no statements concerning claims to a method (or process, these two terms being used synonymously in this decision), wherein the purpose for carrying out the method is defined in the claim. However, in decision G 2/88 (see point 2.2) it is stated that there are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use) and (see point 2.5) that the technical features of a claim to an activity are the physical steps which define such activity. Decision G 2/88 further distinguishes, in the context of defining the extent of protection conferred under Article 64(2) EPC, between claims which define the use of a particular physical entity to achieve an "effect" and the use to produce a "product" (cf. point 5.1) and concludes that providing that the use claim in reality defines the use of a substance to achieve an effect and does not define such a use to produce a product, the use claim is not a process claim within the meaning of Article 64(2) EPC. Thus the criteria set out by the Enlarged Board of Appeal in the aforementioned decisions may only be applied to claims directed exclusively to the use of a substance for achieving an effect. They cannot be extended to interpreting a claim to a method for producing a product, which includes one or more physical steps, wherein the purpose of carrying out said method is defined, as including said purpose as a functional technical feature (see also decisions T 1179/07, point 2.1.3 of the reasons for the decision, T 1343/04, point 2 of the reasons for the decision and T 1049/99, points 8.4.4 and 8.5 of the reasons for the decision, none published in OJ EPO)" and further under 3.3.3

    "In the present case (T304/08), claim 1 defines the physical step of applying a surface-active agent to an absorbent material. Said claim is thus a "process" claim within the meaning of Article 64(2) EPC, since it specifically includes a physical step which results in the production of a product, namely an absorbent treated with a surface-active agent, and is not a "use" claim in the sense of decisions G 2/88 and G 6/88, which relate exclusively to claims directed to the use of a substance for achieving an effect. Thus the purpose of the method in present claim 1, namely for reducing malodour, cannot be regarded as a functional technical feature in the sense of decisions G 2/88 and G 6/88".

    In other words, G2/88 relates to claims directed to "use of a (known) substance for achieving an (new) effect", which must be distinguished from claims (as in T304/08) directed to "method for producing a product where the purpose for carrying the method is defined". The claim of the present decision is directed to a method in which the purpose of the method is defined but probably not interpreted as a method for producing a product within the meaning of T 304/08.

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  4. Thank you for the interesting discussion. I even think that the catchword of this decision is also applicable to methods for producing a product. To me, the catchword implies that the suitability of a method for something, e.g. for producing a product or for preventing malodour is always limiting. The question is: does the prior art explicitly or implicitly disclose said purpose.

    If the disclosed method steps inevitably lead to the production of the product or the prevention of malodour, the suitability is no delimiting feature.

    For the production of a product, said suitability will often be the case. In other scenarios like odour prevention, there may be something missing in the prior art method (e.g. use of a certain concentration of a substance) and the odour prevention not necessarily obtained.

    To me, the catchword seems to answer when a purpose recited in a method claim is limiting. Answer: always. The difference is made by the disclosure content of the prior art.

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  5. @Guido:

    So if claim 1 of the patent underlying decision T 304/08 had been phrased as a use claim, e.g. "Use of a surface-active agent having a hydrophilic/lipophilic balance (HLB) of less than 12, said surface-active agent being effective to reduce the odor of urine, for reducing malodor associated with a disposable absorbent product intended for the absorption of body fluids, wherein said absorbent product comprises a water-swellable, generally water-insoluble synthetic hydrogel polymeric absorbent material.", G 2/88 would have applied and the patent would not have been revoked for lack of novelty?

    It seems weird, but it is IMO the only way to resolve the apparent contradiction between G 2/88 and T 304/08.

    Probably the patentee could not have performed such a rephrasing after grant, as it would infringe Art 123(3) EPC. The take-home message here seems to be to include a claim in "use format" in the original claim set as a safeguard, whenever appropriate.

    -Anynomous@10:38

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    Replies
    1. @ Anonymous@21:09: Interesting perspective. However, I am cautious into drawing/applying the conclusions of a case law decision into a another. For current practice I would rather stick to the latest guidelines GL(2017), F-IV, 4.13 which has, as said before, recently been amended and clarified exactly on this aspect (method of manufacture) and where in fact the distinction between the different types of method claims and the consequences for interpreting the functional features therein are well explained.

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  6. Sorry, but I don't agree with the BoA and the commenters here.

    I find the claim fully clear for the skilled person in that (to me) it specifies that the oxygen produced in the process should meet the technical requirements of being usable for an IGCC power system, no more, no less.

    And steps a) and b) just specify simple yes/no input signals that make the oxygen producing process change its operating parameters.

    If the applicant would have wanted the claim as it is interpreted by the BoA, he should have claimed 'a process for producing power using an integrated gasifier combined cycle (IGCC) power generation system, whereby the process includes a step of producing oxygen, etc.....'

    I challege you: what is the product protected under A64(2) from this process? Oxygen or power? If you say oxygen (which is the correct answer in my view) the interpretation of the BoA just doesn't make sense.

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