Drafting second non-medical use claims

Case Law Patents

For this Opposition Appeal a second non-medical use claim was examined for novelty. The claim was interpreted as a composition containing an active component for corrosion reduction. In the prior art a similar composition comprising the same active component was disclosed for corrosion reduction, however the active component as-such was not disclosed for this use. Still the appealed claim was deemed not novel as it was deemed directed to a composition for a specific use, and the use of this composition was already in the prior art.

Claim 1, in summary, concerns the use:

in the lubrication of a compression-ignited internal combustion engine...
of an oil-soluble boron containing compound comprising an ashless borated dispersant ... as an additive component in a minor amount, in a lubricating oil composition,
to reduce and/or inhibit the corrosion of the metallic engine components, during operation of the engine...

Interpretation of the claim

Reason 1.2.2 discussed the interpretation of the claim. The respondent (Patentee) argues that the claim should be read towards ‘the use of the boron, as an additive component’ but the Board does no go along; the claim explicitly states that the boron compound is used ‘as an additive in a minor amount, in a lubricating oil composition’. The lubricating oil composition is therefore deemed the composition that relates to the use and not the boron compound. Based on this interpretation it went downhill for the respondent.

In comparison, the syntax of the allowable claim of G2/88 was very similar but not the same:

Use of at least 1% by weight based on the total composition of a borated glycerol or a borated thioglycerol produced by borating a glycerol or thioglycerol of the formula : wherein each X is S or O, and R is a hydrocarbyl group of from 8 to 24 carbon atoms, as a friction reducing additive in a lubricant composition comprising a major portion of a lubricating oil.

The appeal

For the Appeal under discussion subsequently novelty over D3 was assessed. D3 concerns a composition with a use ‘to reduce and/or inhibit the corrosion of the metallic engine components during operation of the engine’. The composition of D3 is a lubricating oil composition comprising minor amounts of boron; ‘greater than 100 to less than 10000 ppm of boron’. Boron is in the composition of D3 as friction modifier whilst a specific amount of a sulphur compound comprising a -C-S-C- bond was deemed to reduce corrosion. Since D3 discloses lubricating oil composition comprising a minor amount of boron for reduction or inhibiting corrosion D3 was deemed to impair novelty for claim 1.

Although the respondent deemed the case was analogue to G2/88 (friction reductive additive) and therefore novelty should be acknowledged, the Board did not go along. ‘In G 2/88 the Enlarged Board of Appeal acknowledged novelty for the use of a known compound in a known means of realization to achieve a new technical effect, even if that effect had been the inherent result of using the known……the present case is distinguished from the situation in G 2/88 because the same composition is used in the same way to achieve the same technical effect as the composition of the prior art.

To reduce and/or inhibit the corrosion of the metallic engine components during operation of the engine

Other case law

Other case law brought forward during the Appeal was also discussed. The Board concluded that the current decision is in line with these decisions. Specifically the Board pointed that the newly found effect of boron in the appealed claim concerned a discovery considering the effect of a composition comprising born was already known (Reason 1.3.7):

‘The Board endorses the aforementioned conclusions in each of the above decisions. The factual situation in those cases however contrasts with that of the present case, which concerns a claim directed to the use of a known composition (the lubricant composition of D3), containing a known substance (the boron compound of D3), for a known purpose (reduction of corrosion, the purpose for which the composition of D3 is used). Although D3 is silent about the role of the boron compound in reducing corrosion, it is nevertheless used in D3 in a composition intended for the same purpose and in the same means of realisation as in present claim 1. The implied recognition in claim 1 that the boron compound contributes to a reduction of corrosion represents nothing more than a newly discovered property or capability underlying the claimed effect or purpose. There is consequently no "new effect" on the basis of which claim 1 may be considered to comprise a functional technical feature distinct from that disclosed in the prior art D3.

Reason 1.3.8 further highlighted

In T 892/94 (reasons, 3.4, final two paragraphs), cited by the appellant in its arguments, it was stated: "It follows from decision G 2/88 and the examples mentioned above that novelty within the meaning of Article 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claim in terms of the use of that substance for a hitherto unknown, new non-medical purpose reflecting said effect (ie a new functional technical feature), even if the only novel feature in that claim is the purpose for which the substance is used.

Conversely, it can be inferred from decision G 2/88 that no novelty exists, if the claim in question is directed to the use of a known substance for a known non-medical purpose, even if a newly discovered technical effect underlying said known use is indicated in the claim."

As a result the decision under Appeal was set aside and the patent was revoked.