8. Second (or further) non-medical use

In T 1385/15 the board held that a claim directed to a further non-medical use could not be found to lack novelty if the prior art did not disclose the claimed technical effect of the substance and the claimed use in combination. The contested decision concerned the patent's independent claim 1, which was directed to the use of a cleaning agent, containing at least two different surfactants selected from at least two of three groups of surfactants – cationic, non-ionic and amphoteric – and, when diluted ready-to-use in an aqueous solution, having a pH value of at least 10.5, to destroy/inactivate micro-organisms selected from the group comprising bacteria, viruses and fungi in the mechanical disinfection of articles. The opposition division had referred in the contested decision to documents D1a and D2 and arrived at the view that independent use claim 1 lacked novelty over D1a in light of D2. It had conceded that neither document in isolation disclosed all the features of that claim but, having analysed G 6/88 (OJ 1990, 114), which was authoritative on assessing the novelty of claims directed to a second non-medical use, concluded that the feature "for destroying ... bacteria, viruses and fungi" was not such as to confer novelty over D1a, because this technical effect of the cleaning agent defined in the claim was already known from D2 and so, in view of G 6/88's headnote ("provided that such technical feature has not previously been made available to the public"), could not make for a novel claim. The board considered that this interpretation in the contested decision was not in line with G 6/88, which itself stated, in point 8 of the Reasons, that, for a finding of lack of novelty, all the technical features of the claimed invention had to have been made publicly available together. The board therefore took the view that a novelty objection could not be based on a combination of the teaching of D1a with that of D2. Summing up, G 6/88 had held that the functional technical feature conferring novelty could lie in achieving a technical effect in a particular context. Thus, in the case at issue, the functional technical feature was the anti-microbial activity in the context of the claimed mechanical disinfection of articles. This feature was not disclosed in D2 and therefore could not be derived from it in any event.

In T 116/14 the board held it to be settled case law that an indication of a purpose in a device claim – a claim beginning, for instance, "device for" or "apparatus for" – had to be interpreted as meaning that the claimed device had indeed to be suitable for that purpose (see T 287/86, point 2.1 of the Reasons). Thus a device's suitability for the purpose indicated had to arise from the interaction of its claimed features alone. It could not depend on features not claimed, even if they were not excluded because the claim's wording was open-ended - for example because it used expressions such as "comprising" and "containing". Otherwise, the claim would lack clarity. This meant a citation could be considered to disclose a feature worded using an indication of purpose ("purpose feature") only if solely the interaction of the attributes of the device it described, as identified from the claimed features other than the purpose feature, gave rise to suitability for the indicated purpose.